Andy Faile, Deputy Commission for Patent Operations started the day off by highlighting two initiatives by the USPTO: interview practice, and a technical training program. Mr. Faile noted that a growing number of interviews were being conducted, benefiting examiners and practitioners alike, and that the number of requests for WebEx interviews was also increasing.
Of particular note, for design patent applications involving Graphical User Interfaces (GUIs), KIPO no longer requires specific indication of an underlying hardware product. For example, prior to the change, a design application directed to protection for a GUI design required the GUI design to be shown with an underlying hardware product, such as a cellular telephone. According to Dr. Kim, KIPO enacted the change to focus on the “heart and soul” of the GUI design and to minimize useless and possibly unduly limiting hardware visualization and description.
Companies often seek broad protection for their products and technology, along with strong enforcement provisions, preferably available at a relatively low cost and via a relatively fast procedure. In the past, however, companies have often overlooked a tool that can provide such protection: the US design patent. Instead, companies have focused on trade dress protection and utility patents. In many companies, the trade mark department considered design patents to add little to trade dress protection, while the patent department considered them an inadequate tool to protect their functional inventions. As a result, design patents often fell through the cracks.
The USPTO seemed to take the position that, in these “rare situations,” the inventor may not have had possession of the newly claimed design because the claimed subset of elements was “seemingly unrelated” to the original design. Some members of the public attending Design Day raised concerns regarding the Office’s position.
Design protection has recently taken the spotlight due to some high-profile, high-stakes cases. Join these panelists for a practitioner-focused overview of design rights, where they will look into: why design patents require a different perspective from utility patents; what the most successful approaches are in prosecuting and litigating design patents; whether the approach to design rights in the U.S. is different from other countries undergoing such a surge.